Mala v Nokia (UPC_CoA_227/2024)
Decision date:
21 June 2024
Osborne Clarke summary
- Mala is the proprietor of a European patent valid only in Germany. In 2021, Nokia Solutions filed a national revocation action in the German Federal Patent Court. In July 2023, the German Federal Patent Court dismissed the German revocation action and upheld the patent in its entirety. The full written decision was served on the parties on 13 and 14 December 2023.
- On 15 December 2023, Nokia Technology filed a revocation against Mala before the Paris CD in relation to the same patent. On the same day, Nokia Solutions filed an appeal again the decision of the German Federal Patent Court.
- On the following day, Mala filed a preliminary objection in the revocation action before the UPC contesting the jurisdiction of the court and, on an auxiliary basis, if the court did not decline jurisdiction then the proceedings be stayed until the final decision in the German national litigation or stayed pending a final decision on its preliminary objection.
- At first instance, the Paris CD rejected Mala's preliminary objection and its request to stay the proceedings. Mala appealed the decision.
- The Court of Appeal held that Mala’s stay request pending the final decision of its preliminary objection was inadmissible because its statement of appeal and grounds did not set out reasons for a stay as per Rule 21.2 RoP. The court noted that arguments raised for the first time at the interim conference cannot cure a lack of reasoning. An interim conference may clarify written grounds, but it is not a substitute for them, particularly given the respondent’s right to prepare its defence. In any event, Mala's arguments put forth at the interim conference were rejected on the merits. As a general rule, the main proceedings are not stayed pending the decision of the Court of Appeal on an order rejecting a preliminary objection. This follows the principle underlying Rule 19.6 RoP and Article 74(1) UPCA, that proceedings before the Court of First Instance must, as far as possible, continue unhindered by any (procedural) appeals.
- The Court of Appeal may grant a stay in exceptional circumstances, having regard to the circumstances of the case, for example the stage of the revocation proceedings before the Court of First Instance, the stage of the appeal proceedings, and the interests of the parties.
- In this case, the revocation proceedings were at the final stage of the written procedure, with the time limit due to expire by 21 July 2024. In this appeal, the written procedure had closed and the oral hearing was to be held on 24 July 2024. It was therefore anticipated that the Court of Appeal's decision would be issued before the oral hearing in the revocation proceedings. The limited additional effort and cost – especially for Mala – did not outweigh Nokia Technology’s interest in a prompt validity decision.
Issue
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